Intellectual property in Bolivia
Based in La Paz, Moreno Baldivieso Estudio De Abogados’ IP branch, Gabriel Patent & Trademark Office, is approaching its ninetieth anniversary and has an excellent reputation for its strength across a wide spectrum of non-contentious and contentious IP work. Trade mark registrations and opposition cases have been prominent in the team's recent workload. Ramiro Moreno and associate director Rodrigo Moreno jointly head the practice; associate director Yamila Droguett, senior associate Freddy Paredes and associate Ronald Lazarte are also recommended.
- Defended Banco de Crédito de Bolivia in a trade mark opposition case brought against the client by Banco Fassil.
- Advised a prominent educational entity on a trade mark opposition case.
- Acted for PepsiCo in a trade mark opposition case against Compañía de Alimentos.
Bufete Aguirre, Quintanilla, Soria & Nishizawa Sociedad Civil – (BAQSN)
The five-strong team at Bufete Aguirre, Quintanilla, Soria & Nishizawa Sociedad Civil – (BAQSN) handles IP portfolio management and due diligence, administrative IP litigation (oppositions, appeals, cancellations, nullities and infringements), patent and trade mark prosecution, and enforcement. The practice has experienced an up-tick in a range of areas including infringement actions comprehensive trademark protection strategies and IP maintenance proceedings (renewals, annuities, modifications). In ongoing work, 'very attentive’ practice head Perla Koziner - an IP all-rounder with 20 years' experience - continues to assist Louis Vuitton with trade mark infringement matters, following a successful appeal before the Supreme Court, leading to the reinstatement of the client's trade mark registration. Julio Quintanilla handles the full range of trade mark matters, especially strategic management, litigation and in relation to corporate transactions. Associates Alessio Rosso (patent prosecution) and Moira Ascarrunz (trade marks, IP due diligence and litigation), are also noted.
‘The whole team works very well, they are quick, accurate and clear in their answers’.
‘Perla Koziner is very attentive’.
‘The speed of the responses is a strong point of the team. They compare favourably with others.’
‘It can be seen that they work well as a team. If someone is out of the office, a colleague responds quickly.’
Nintendo of America
American Eagle Outfitters
- Acting for American Eagle Outfitters in trade mark opposition litigation.
- Successfully assisted accessories company TOUS with a trade mark infringement case.
- Management of the 250-plus trade mark portfolio of Industrías Venado; involving registration, control and follow-up, administrative litigation and portfolio strategy and analysis.
Bolet & Terrero
The five-strong team at IP boutique Bolet & Terrero is particularly well known for its capabilities advising on anti-counterfeiting matters for media, technology, retail and pharmaceutical sector clients. Beyond that niche, trade mark cases, regulatory matters, copyright and franchising mandates are all other areas of expertise. Practice head Juan Ignacio Zapata (IP advisory and litigation; corporate and commercial law), and senior associates Mario Cruz (head of trade mark prosecution) and Carolina Amonzabel (head of administrative litigation), are the key contacts. Head of portfolio management for patent and trade mark cases, 40-year firm veteran Roberto Roque has a 360-degree vision of the sector.
Escobar & Escobar
Ten-strong IP-specialist boutique, Escobar & Escobar's 'very experienced' team 'demonstrates extensive knowledge of intellectual property issues’. The 'responsible and practical’ group handles a broad spectrum of IP work (much of it referred by international correspondant firms); however, trade mark matters remain at the core of the team's caseload, along with anti-counterfeiting mandates, which have been prominent of late. The firm averages some 10% of infringement and brand cancellation demands in Bolivia, as well as undertaking criminal prosecution against counterfeit trade marked goods and direct seizures of false merchandise. IT and internet law are other areas of expertise. The 'excellent’ Joaquin Fernando Escobar (corporate law and IP litigation), 'provides effective solutions’ and garners praise for his 'vast knowledge of intellectual property matters’; he shares leadership of the practice with 30-year veteran IP practitioner Romualda Cabezas de Escobar, and commercial director, Juan Carlos Escobar, who is not a lawyer.
‘The team demonstrates extensive knowledge of intellectual property issues’.
‘The group is responsible and practical’.
‘Joaquin Fernando Escobar is excellent; he provides effective solutions and has vast knowledge of intellectual property matters’.
Roberto Gomez Fernandez
Great Wall Motor Company
Aspen Global Incorporated
- Represents Chilean textile company Bellavista Oveja Tome in a range of matters pertaining to trade marks and anti-counterfeiting work.
- Assisting food company Carozzi with trade mark work, including acting for the client in anti-counterfeiting matters.
Estudio Jurídico Orpan
Founded in 1955, La Paz-based IP boutique Estudio Jurídico Orpan handles trade marks, patents, industrial designs, copyright, plant varieties, domain names, sanitary registrations, prosecution and litigation, primarily for international clients, and stands out in the market for its 'extraordinary IP work’. A former president of the Bolivian Intellectual Property Association, senior partner Pilar Soruco is nearing retirement; partner and general director of the practice, Wolfgang Ohnes, himself a former vice-president of the same organisation, is now the key point of contact.
Established in 2015, the Bolivian office of Uruguay-headquartered, multijurisdictional IP specialists Cervieri Monsuarez field a 10-strong team led since the outset by director and anti-counterfeiting expert Mónica Rivero, along with fellow practice co-heads, IP litigation specialist Diego Rocabado, and experienced associate Andrés Daza. Other key figures at associate level include: Francisca Cisneros (trade marks); Javier Espejo, who assists Rivero with anti-counterfeiting mandates; and Gardenia Revollo, who lends support to Rocabado on a range of contentious matters. The practice has developed a particularly strong client roster from the fashion, food and beverage, consumer goods and sports sectors, primarily in relation to trade mark registrations and cancellations.
‘They are very quick to provide solutions and strategies’.
‘The time and quality of the responses, as well as the willingness to work in and explain conflict situations. They know the market and care about getting the knowledge to customers to understand it. The region has very different idiosyncrasies, which make inter-jurisdictional work difficult without a person who knows both and realises them.’
‘Bolivia is a very difficult market but they are highly professional and easy to work with.’
‘We work with the entire team in different countries. The partners are aware of the processes and are willing to meet with the client in order to clarify any questions.’
‘Remarkable speed in the delivery of solutions and/or strategies.’
The Polo Ralph Lauren Company
- Assisted a prominent fashion company with anti-counterfeiting issues concerning the use of the brand name on counterfeit products.
- Acting for a food and beverages company in a trade mark infringement claim.
- Represented a prominent sports company in trade mark litigation.
C.R. & F. Rojas – Abogados
The core, three-strong team at C.R. & F. Rojas – Abogados comprises partners Paula Bauer, who specialises in IP and pharmaceutical law; and Alejandra Bernal, who covers the same areas but is equally dedicated to tax matters; and associate Melissa Gamarra. The group is primarily focused on trade mark matters, with recent work involving numerous applications for trade mark registration, renewals and transfers on behalf of Procter & Gamble, HD, DKT International and Eastman Chemical; trade mark infringement litigation on behalf of Aitor Ider Balbo and FV; website review, data privacy and protection matters for PriceLine International and Exterran Corporation, among others, as well as trade mark cancellation defence and the transfer of intangible assets.
‘I had the opportunity to work with the legal team of C.R. & Rojas Abogados on several occasions and we have been hiring their services in the intellectual property area for more than 20 years. I would describe their work as:
1) Extremely efficient.
2) Expedited answers.
3) Great knowledge of the intellectual property area, particularly, trade mark registration and trade mark litigation.
4) Excellence in advising on the above.
The firm is our first choice among all the law firms in Bolivia when we need intellectual property services in that country.’
Procter & Gamble
The Gillette Company
Trade mark work is the key pillar of Guevara & Gutiérrez S.C’s practice (although its patents' sub-sector caseload is also growing), which has been kept busy handling registrations and litigation for clients in the food and beverage, transport, manufacturing and media sectors. Experienced senior associate Marcos Mercado, who has 14 years at the firm, heads up the IP practice; partner level support comes from Jorge Inchauste (whose broad corporate practice takes in IP); associate Diego Benavides who focuses on trade mark matters is also noted. Since publication the firm has announced a tie-up with Dentons, effective as of mid-March 2021.
Asahi Glass Company
Nintendo (Japan and USA)
Federación Nacional de Cafeteros de Colombia
Victor Equipment Company
- Assisting Bavaria Colombia with contentious work relating to its trade mark.
- Assisted Federación Nacional de Cafeteros de Colombia with managing its trade mark portfolio.
- Assisting American Airlines with its trade mark portfolio.
Landívar & Landívar Attorneys At Law
Founded in 1962, La Paz-based IP-boutique Landívar & Landívar Attorneys at Law was something of a pioneer in the sector. It's full-service IP offering includes patents, models and industrial secrets; trade marks and names; copyright, and relevant administrative litigation (renovations, cancellations, oppositions and defence), as well as transfers, internet-related matters and corporate work. Most recently it has developed an IP-training capability for relevant executives, business people and start-ups. Martha Landívar and Isabel Landívar are the names to note.
The IP practice at PPO Abogados is led by senior associate Ana Valeria Escobar, who arrived from the former Meloria IP (BASQN) in May 2019, replacing Carolina Finfera who moved to Würth Bedoya Costa Du Rels Abogados as a partner. Key support and partner level engagement comes from Lindsay Sykes, whose IP practice focuses on complex and highly sensitive matters and strategy. The small group has been especially active advising international and local clients on contentious and non-contentious trade mark work, with one ongoing mandate seeing Escobar and Sykes assist Laboratorios Sophia regarding local trade mark portfolio management and both administrative and litigious matters. At associate level, Julio Cachi - formerly at the Bolivian trade mark office - is also noted; Brenda Eterović is currently on secondment in-house at Nestlé, but Ximena Zapata left the firm to move in-house at Huawei Technologies. Since publication the firm has considerably bolstered the practice with the incorporation of a former president of the Bolivian Intellectual Property Association, Pilar Soruco, along with two associates and five support staff (from Estudio Jurídico Orpan), in late March 2021.
‘The relationship between the client and the lawyer is very close. You can contact them by WhatsApp, email or calls and they always have quick answers.’
‘They are always ready to find a quick solution and at the lowest possible cost. They are updated with the new precedents. They handle large projects in a clear and orderly manner. In our experience, the services provided are superior to experiences with other law firms.’
‘It is an office with several areas of expertise which makes the consultancy comprehensive.’
‘They are always very pending and monitoring cases constantly. The lawyer in charge of the Belcorp cases is called Ana Valeria Escobar.’
Genomma Lab Internacional
Óptica Santa Lucía
- Ongoing management of Bayer’s trade mark portfolio locally, involving trade mark applications and opposition matters.
- Assisting Rigo Trading with trade mark applications, most recently involving Haribo’s 3D design for its gummi bear sweets.
- Advising Óptica Santa Lucia on the introduction of new trade marks into the market.
The IP practice at Würth Bedoya Costa Du Rels Abogados was bolstered in May 2019 with the arrival of former-Ferrere senior associate, Carolina Finfera, as partner and practice head, which saw the department increasingly active in trade mark work, advising prominent clients on trade mark portfolios and handling litigation concerning oppositions and infringement matters. As we go to press, however, Finfera's July 2020 departure has been confirmed, leaving La Paz-based semi-senior, associate Natalia Palacios as the key practice contact.
Multipartes Santa Cruz
- Advising Hipermaxi on cross-border trade mark application matters.
- Ongoing advisory to newspaper company El Deber concerning its trade mark portfolio in Bolivia, and representing the client in oppositions and litigation.
- Representing Multipartes Santa Cruz in administrative litigation pertaining to its trade marks.